Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 11/10/2019

PERANI & PARTNERS SPA

Piazza Armando Diaz, 7

I-20123 Milano

ITALIA

Application No:	018053708
Your reference:	C008934
Trade mark:	FOOD, REDISCOVERED.
Mark type:	Word mark
Applicant:	Kabushiki Kaisha Mizkan Holdings 2-6 Nakamura-cho Handa-Shi, Aichi-Ken 475-8585 JAPÓN

The Office raised an objection on 11/06/2019 pursuant to Article 7(1)(b) and Article 7(2) EUTMR because it found that the trade mark applied for is devoid of any distinctive character for the reasons set out in the attached letter.

The applicant submitted its observations on 09/08/2019, which may be summarised as follows:

• The mark is distinctive.

Pursuant to Article 94 EUTMR, it is up to the Office to take a decision based on reasons or evidence on which the applicant has had an opportunity to present its comments.

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

Distinctiveness

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

The marks referred to in Article 7(1)(b) EUTMR are, in particular, those that do not enable the relevant public ‘to repeat the experience of a purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services concerned’ (27/02/2002, T‑79/00, Lite, EU:T:2002:42, § 26). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 65).

Registration ‘of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use’ (04/10/2001, C‑517/99, Bravo, EU:C:2001:510, § 40). ‘Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign’ (11/12/2001, T‑138/00, Das Prinzip der Bequemlichkeit, EU:T:2001:286, § 44).

The applicant argued that the word mark ‘FOOD, REDISCOVERED’ is distinctive in relation to the goods and services in Classes 5, 29, 30, 32, 33 and 43, for which protection is sought, and drew attention to case-law on the interpretation of Article 7(1)(b) in relation to promotional messages.

The applicant highlighted that the notice of grounds for refusal only stated that the relevant public is the English-speaking consumer and that no further assessment of the relevant public was made.

It is unclear what further information in relation to the relevant public the applicant was missing, as the applicant did not define the relevant public in more detail.

It is settled case-law that the distinctive character of a trade mark must be assessed, first, by reference to the products or services in respect of which registration has been applied for and, second, by reference to the perception of the relevant public, which consists of average consumers of the products or services at issue, who are reasonably well informed and reasonably observant and circumspect (29/04/2004, C‑473/01 P & C‑474/01 P, Tabs (3D), EU:C:2004:260, § 33; 08/05/2008, C‑304/06 P, Eurohypo, EU:C:2008:261, § 67; 21/01/2010, C‑398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 34).

The goods and services covered by the application are primarily addressed to average English-speaking consumers who are reasonably well-informed and reasonably observant and circumspect consumers.

Although the criteria for assessing distinctiveness are the same for the various categories of marks, it may become apparent, in applying those criteria, that the relevant public’s perception is not necessarily the same for each of those categories and that, therefore, it may prove more difficult to establish distinctiveness for some categories of mark than for others (29/04/2004, C‑456/01 P & C‑457/01 P, Tabs (3D), EU:C:2004:258, § 38).

Moreover, it is also settled case-law that the way in which the relevant public perceives a trade mark is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 42; and 03/12/2003, T‑305/02, Bottle, EU:T:2003:328, § 34).

A sign, such as a slogan, that fulfils functions other than that of a trade mark in the traditional sense of the term ‘is only distinctive for the purposes of Article 7(1)(b) EUTMR if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin’ (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 20 ; and 03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 21).

The applicant referred to the criteria for the assessment of distinctive character in laudatory promotional messages set by the European Court of Justice (ECJ) in 21/01/2010, C‑398/08 P, ‘Vorsprung durch Technik’, EU:T:2010:29 and 13/04/2011, T‑523/09, ‘Wir machen das Besondere einfach’, EU:T:2011:175. The applicant added that a mark cannot be refused registration because it has a positive connotation.

In addition, the applicant referred to the judgment 21/10/2004, C‑64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 31, where the Court held that a slogan does not have to contain an additional element of imagination or an additional element of originality to be acceptable and that stricter criteria should not apply to slogans than for other marks.

The argument that the Office applied stricter criteria because the mark at issue is a laudatory promotional slogan, is not well grounded. The mark was examined in accordance with general rules, applicable to any other word trade marks, whose meaning makes sense in respect of the goods and services for which protection is sought. The sign is rejected not because it is a slogan per se, but because it has a direct and evident meaning in relation to the goods and services for which protection is sought.

While it is true that the judgment of 21/01/2010, C‑398/08 P, Vorsprung durch Technik, EU:C:2010:29, did not exclude promotional formulas from registration, it did not indicate that all slogans are distinctive and may be registered just because they are promotional formulas. In paragraph 45 of that judgment the ECJ stated that ‘in so far as the public perceives the mark as an indication of that origin, the fact that the mark is at the same time understood – perhaps even primarily understood – as a promotional formula has no bearing on its distinctive character’. This means that the relevant public has to perceive a promotional formula as indicating a source for it to be considered distinctive. In parenthesis, the ECJ seems to have accepted the mark at least partly because of its long-standing use.

Lastly, inasmuch as it is a widely known slogan which has been used by Audi for many years, it cannot be excluded that the fact that members of the relevant public are used to establishing the link between that slogan and the motor vehicles manufactured by that company also makes it easier for that public to identify the commercial origin of the goods or services covered.

(21/01/2010, C‑398/08 P, Vorsprung durch Technik, § 59)

This means that the relevant public has to perceive a promotional formula as indicating a source for it to be considered distinctive. This is confirmed in a later judgment (12/07/2012, C‑311/11 P, Wir machen das besondere Einfach, § 35), in which the Court referred to the judgment of 21/01/2010, C‑398/08 P, Vorsprung durch Technik, § 28-34, and concluded that:

It is thus clear from the analysis made by the General Court that it reached the conclusion that the mark was devoid of distinctive character not on the ground that it was a promotional formula but on the ground that it was not perceived by the relevant public as an indication of the commercial origin of the goods and services concerned.

(12/07/2012, C‑311/11 P, Wir machen das besondere Einfach, § 35.)

Contrary to the applicant’s assessment, the Office does not find that ‘FOOD, REDISCOVERED’ is vague and triggers a cognitive effect in the mind of the consumers. ‘FOOD’ clearly refers to the type of goods, namely something that can be eaten, and ‘REDISCOVERED’ clearly indicates that it is something that has been discovered again, hence it is immediately clear that the goods are food, supplements and dietetic products based on food, that have been discovered again and the services, provision and information about such goods.

The applicant argued that ‘FOOD, REDISCOVERED’ could be perceived in various ways, and provided the example that ‘the quality of the foodstuff is so goods that it would be for the consumer like taste it for the very first time’. This example does not make sense in relation to the word elements of the mark.

Even if the mark at issue could have several meanings, those various meanings only make the sign distinctive insofar as it is immediately perceived by the relevant public as an indication of the commercial origin of the applicant’s goods, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s goods from those of a different commercial origin. (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 84). This is not the case with the applicant’s mark.

Contrary to the applicant’s argument, the construction of the mark: ‘FOOD’ being separated from ‘REDISCOVERED’ by a comma, does not make the mark abstract and ambiguous.

The expression ‘FOOD, REDISCOVERED’ is grammatically correct in English.

When viewing the trade mark as a whole, in relation to the goods and services at issue, the Office does not believe that the use of a comma can detract from the meaning of ‘FOOD, REDISCOVERED’ overall. The comma does not alter the meaning of the expression. It separates the words from each other, making it even more apparent that the goods are foodstuffs that have been rediscovered and the provision and information about such food.

With regard to the applicant’s comment, that it is not clear why the food has been rediscovered, this question would maybe be the second step in the mind of the relevant consumers. However, the first and immediate message the relevant consumers would perceive from ‘FOOD, REDISCOVERED’ is that it is food, supplements and dietetic products based on food, provision of food and/or information about food, that have been discovered again. In other words, that it is foodstuffs that have not been commonly used, marketed or popular, that are rediscovered, for example, for their health benefits, flavour, or based on a (almost) forgotten recipe.

The Office, therefore, maintains that ‘FOOD, REDISCOVERED’ is a banal laudatory promotional message with a clear and direct meaning in relation to the goods and services for which protection is sought.

Further proceedings

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 18 053 708 is hereby rejected for all the goods and services claimed.

According to Article 67 EUTMR, you have a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

Anja Pernille LIGUNA